You have worked hard, you are proud of your beer, and you want the market, if not the world, to know that it is your product. At the end of the creative process, like any other artist or craftsperson, you have the urge to sign your work. However, from the perspective of trademark law, that impulse may lead to a number of complications.
A trademark is stronger if the protected word is arbitrary or fanciful, or at most suggests the desirable aspects of the product or service. Trademarks that describe the product or service, such as “Bitter IPA” or “Red Strawberry Ale” are the weakest sort of trademarks that could be registered. Descriptive trademarks are registered, if at all, only on the Supplemental Register and provide only some of the protections available to stronger trademarks that are registered on the Principle Register. Generally, use in commerce for at least five years is needed to provide the secondary meaning that shows that potential consumers associate the trademark with the source of the product or service.
Using your family name or surname as a trademark for your beer might not be the best approach. The U.S. Trademark Office would consider a trademark that is “primarily merely a surname” as a weak descriptive trademark, and may even refuse to register the trademark on the Supplemental Register if it a common surname. Adding initials or a first name to the surname may strengthen the trademark, but this modification may not solve all your problems.
If someone is already using your surname as a trademark, even if it is used for something other than beer, you may run into problems when attempting to trademark your personal name for your beer. Family feuds over trademarks are common. In 1989, for example, Ernest and Julio Gallo sued their brother Joseph to keep him from using the Gallo name as a trademark for cheese. The parties in such disputes don’t have to be immediate family members. Ferragamo S.p.A., an Italian company known primarily for luxury shoes, has sued former NFL quarterback Vince Ferragamo to stop him from using his own surname for his winery.
Even if you avoid all of these complications, success and any prospective sale of your brewing company may prevent you from using your own name in later projects. The sale of a business that owns trademarks usually includes the sale of the trademarks and their associated goodwill. This complication is not uncommon. One example is that of clothing designer Jason Abboud. After selling his business, and his registered trademark, for more than $65 million, and a decade long legal battle, Joseph Abboud is still prevented from using his name as a trademark for clothing.
One way to avoid some of these problems is to use the name of a historical figure, such as a prominent rebel in the American revolution, instead of your own name. The U.S. Trademark Office may not consider a name as a descriptive trademark, that is, not “primarily merely a surname” if that name also identifies a historical place or person. Viewed from the perspective of trademark law, there are advantages to calling a beer “Sam Adams Boston Lager” instead of “James Koch Boston Lager.” The best way to avoid potential trademark problems, however, is to choose a unique and creative name for your brand that is not directly tied to your personal name.
Roger has extensive experience in various aspects of intellectual property, including client counseling, licensing and agreements, and preparation and prosecution of U.S. and international patent applications in the areas of biotechnology, pharmaceuticals, materials, chemistry and medical devices. Prior to practicing law, Roger was a member of the faculties of Rush Medical College and the University of Illinois at Chicago.